throbber
Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 1 of 27
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`
`
`Civil Action No. 1:15-cv-04219-TWT
`
`[REDACTED VERSION
`FILED PUBLICLY]
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
`IRONBURG INVENTIONS LTD.,
`
`Plaintiff,
`
`v.
`
`VALVE CORPORATION,
`
`Defendant.
`
`DEFENDANT VALVE CORPORATION’S MEMORANDUM IN SUPPORT
`OF MOTION TO COMPEL SUPPLEMENTAL INFRINGEMENT
`CONTENTIONS AND MOTION TO STRIKE DOCTRINE OF
`EQUIVALENTS INFRINGEMENT CONTENTIONS
`B. Trent Webb (pro hac vice)
`Thomas W. Curvin (GA 202740)
`MO Bar No. 40778
`SUTHERLAND ASBILL &
`Patrick A. Lujin (pro hac vice)
`BRENNAN LLP
`MO Bar No. 41392
`999 Peachtree Street, NE, Suite 2300
`Mark D. Schafer (pro hac vice)
`Atlanta, Georgia 30309-3996
`MO Bar No. 67197
`(404) 853-8314 (telephone)
`SHOOK, HARDY & BACON L.L.P.
`(404) 853-8806 (facsimile)
`255 Grand Boulevard
`tom.curvin@sutherland.com
`Kansas City, Missouri 64108
`(816) 474-6550 (telephone)
`(816) 421-5547 (facsimile)
`bwebb@shb.com; plujin@shb.com;
`mschafer@shb.com
`
`and
`
`
`
`
`
`
`
`
`

`

`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 2 of 27
`
`Tanya L. Chaney (pro hac vice)
`TX Bar No. 24036375
`SHOOK, HARDY & BACON L.L.P.
`600 Travis Street, Suite 3400
`Houston, Texas 77002
`(713) 227-8008 (telephone)
`(713) 227-9508 (facsimile)
`tchaney@shb.com
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`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 3 of 27
`
`TABLE OF CONTENTS
`
`II.
`
`TABLE OF AUTHORITIES .................................................................................... ii 
`I.
`INTRODUCTION .......................................................................................... 1 
`FACTUAL BACKGROUND ......................................................................... 2 
`III. LEGAL STANDARDS .................................................................................. 5 
`IV. ARGUMENT .................................................................................................. 7 
`A.
`Ironburg’s infringement contentions fail to identify specifically where
`each limitation of each asserted claim is allegedly found within the
`Steam controller. .................................................................................. 7 
`Ironburg’s doctrine of equivalents contentions are inadequate and
`untimely. ............................................................................................. 16 
`CONCLUSION ............................................................................................. 18 
`
`B.
`
`V.
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`- i -
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`

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`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 4 of 27
`
`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340 (Fed. Cir. 2009) .............. 6
`
`Page(s)
`
`Connectel, LLC v. Cisco Sys., Inc., 391 F. Supp. 2d 526 (E.D. Tex. 2005) .......... 5–6
`
`Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605 (1950) ................ 18
`
`McKesson Info. Sols. LLC v. Epic Sys. Corp., 495 F. Supp. 2d 1329 (N.D.
`Ga. 2007) ......................................................................................................... 5, 15
`
`Rambus Inc. v. Hynix Semiconductor Inc., 2008 WL 5411564 (N.D. Cal.
`2008) ................................................................................................................... 18
`
`Schütz Container Sys., Inc. v. Mauser Corp., 2010 WL 2408983 (N.D. Ga.
`2010) ......................................................................................................... 6, 17–18
`
`Sipco, LLC v. Control4 Corp., Case No. 1:11-cv-00612-JEC-ECS (N.D. Ga.
`Sept. 29, 2012) .............................................................................................. 17–18
`
`View Eng’g, Inc. v. Robotic Vision Sys., Inc., 208 F.3d 981 (Fed. Cir. 2000) .......... 5
`
`Rules
`
`Fed. R. Civ. P. 37 ....................................................................................................... 1
`
`LPR 1.2(a) .................................................................................................................. 5
`
`LPR 4.1 .............................................................................................................. 1, 2, 5
`
`LPR 4.1(b)(4) ....................................................................................................... 6, 17
`
`LPR 4.2 ...................................................................................................................... 3
`
`
`
`
`
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`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 5 of 27
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`Defendant Valve Corporation (“Valve”) respectfully moves the Court,
`
`
`
`
`
`pursuant to Federal Rule of Civil Procedure 37 and Patent Local Rule 4.1, for an
`
`Order compelling Plaintiff Ironburg Inventions Ltd. (“Ironburg”) to serve
`
`supplemental infringement contentions that comply with Patent Local Rule 4.1
`
`and, in addition, striking Ironburg’s contentions alleging infringement under the
`
`doctrine of equivalents.
`
`I.
`
`INTRODUCTION
`
`This is a patent infringement lawsuit, in which Ironburg alleges that Valve’s
`
`Steam controller infringes four of Ironburg’s patents. The four asserted patents—
`
`U.S. Patent Nos. 8,641,525 (“the ’525 patent”), 9,089,770 (“the ’770 patent”),
`
`9,289,688 (“the ’688 patent”), and 9,352,229 (“the ’229 patent”) (collectively, “the
`
`Asserted Patents”)—relate to hand-held controllers for playing video games.
`
`Ironburg’s infringement contentions are deficient in at least two ways. First,
`
`Ironburg refuses to identify where each limitation of each asserted claim is found
`
`within Valve’s Steam controller. For example, Ironburg’s contentions as to what
`
`portion of the Steam controller corresponds to the claimed “elongate member” are
`
`incomplete, vague, confusing, and inconsistent across the various asserted claims.
`
`Without a clear understanding of Ironburg’s infringement contention regarding
`
`“elongate member,” Valve’s ability to prepare a defense is handicapped. This is
`
`
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`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 6 of 27
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`
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`particularly problematic because every claim of the Asserted Patents includes this
`
`limitation.
`
`Second, Ironburg provides boilerplate allegations regarding Valve’s alleged
`
`infringement under the doctrine of equivalents (“DOE”), rather than the limitation-
`
`by-limitation disclosure required by the rules. In addition to being mere
`
`boilerplate, Ironburg’s DOE contentions were first asserted in December 2016, five
`
`months after the deadline. Ironburg’s untimely and generic DOE allegations are
`
`mere placeholder statements which provide no information to inform Valve’s
`
`potential defenses, as required.
`
`Valve thus respectfully requests an order compelling Ironburg to provide
`
`more detailed infringement contentions that comply with the rules, and striking
`
`Ironburg’s DOE infringement contentions.
`
`II.
`
`FACTUAL BACKGROUND
`
`On July 1, 2016, Ironburg served its infringement contentions for the ’525,
`
`’770, and ’688 patents purportedly pursuant to Patent Local Rule 4.1. See July 1,
`
`2016 Infringement Contentions, attached as Exhibit A. On August 19, 2016,
`
`Ironburg served its infringement contentions for the ’229 patent, which had been
`
`added as an Asserted Patent a few days earlier. See August 19, 2016 Infringement
`
`Contentions, attached as Exhibit B.
`
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`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 7 of 27
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`
`
`On August 1, 2016, Valve served its response to Ironburg’s infringement
`
`contentions for the ’525, ’770, and ’688 patents, as required by Patent Local Rule
`
`4.2. See August 1, 2016 Response to Infringement Contentions, attached as
`
`Exhibit C. On September 19, 2016, Valve served its response to Ironburg’s
`
`infringement contentions for the ’229 patent. See September 19, 2016 Response to
`
`Infringement Contentions, attached as Exhibit D. In its responses, Valve raised
`
`objections to a number of deficiencies in Ironburg’s infringement contentions.
`
`Those deficiencies included Ironburg’s failure to specifically identify where each
`
`limitation of each asserted claim was found within the Steam controller. See Exh.
`
`D at 2.
`
`A month after serving its responses, and still not having received any
`
`response addressing the deficiencies in Ironburg’s infringement contentions,
`
`Valve’s counsel sent Ironburg’s counsel a letter again pointing out the deficiencies
`
`and requesting supplemental contentions. See October 20, 2016 Letter from Lujin
`
`to Becker, attached as Exhibit E. On November 8, 2016, more than three months
`
`after Valve first pointed out the deficiencies, Ironburg served a “draft proposed
`
`update” to its contentions, but only for the ’525 patent. See November 8, 2016
`
`Email from Becker to Lujin, attached as Exhibit F. The next day, Valve’s counsel
`
`responded and identified key deficiencies that still remained in Ironburg’s
`
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`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 8 of 27
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`
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`contentions, including Ironburg’s position regarding the “elongate member” claim
`
`limitation. See November 9, 2016 Email from Lujin to Becker, attached as Exhibit
`
`G.
`
`Over a month later, Ironburg served “draft proposed updates” to its
`
`contentions for all four Asserted Patents. See December 15, 2016 Infringement
`
`Contentions, attached as Exhibit H. Ironburg informed Valve that Ironburg
`
`believed its contentions fully complied with the Patent Local Rules. See December
`
`14, 2016 Email from Becker to Lujin, attached as Exhibit I. According to
`
`Ironburg’s counsel, the “elongate members” were vaguely “located on the back of
`
`the Steam controller.” Id. For the first time, Ironburg’s December 15, 2016
`
`contentions alleged infringement under the doctrine of equivalents.
`
`The parties have been conferring for over two months now by phone, email,
`
`and letter in an attempt to resolve this dispute. It is now clear that they have
`
`reached an impasse. Therefore, Valve files this motion to request an order
`
`compelling Ironburg to provide more detailed infringement contentions as required
`
`by the Patent Local Rules, and to strike Ironburg’s DOE contentions.
`
`
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`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 9 of 27
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`
`
`III. LEGAL STANDARDS
`This Court has enacted local patent rules “to facilitate the speedy, fair and
`
`efficient resolution of patent disputes.” See Local Patent Rule LPR 1.2(a). The
`
`Local Patent Rules were intended “to elicit the parties’ positions on infringement
`
`and invalidity early in the case,” thereby discouraging gamesmanship and
`
`facilitating early resolution of disputes. McKesson Info. Sols. LLC v. Epic Sys.
`
`Corp., 495 F. Supp. 2d 1329, 1332 (N.D. Ga. 2007). Because this Court’s Local
`
`Patent Rules are very similar to those of the Eastern District of Texas and the
`
`Northern District of California, decisions of those courts related to their patent
`
`rules can be persuasive authority for interpretation of this Court’s rules. See id.
`
`Local Patent Rule 4.1 requires that a plaintiff’s infringement contentions
`
`must provide reasonable notice to the defendant as to why the plaintiff believes it
`
`has a “reasonable chance of proving infringement.” View Eng’g, Inc. v. Robotic
`
`Vision Sys., Inc., 208 F.3d 981, 986 (Fed. Cir. 2000). Plaintiffs “must explain with
`
`great detail their theories of infringement.” Connectel, LLC v. Cisco Sys., Inc., 391
`
`F. Supp. 2d 526, 528 (E.D. Tex. 2005). To meet this requirement, infringement
`
`contentions must provide the defendant with “notice of infringement beyond that
`
`which is provided by the mere language of the patent [claims] themselves.” Id. at
`
`
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`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 10 of 27
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`
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`527-28. Vague or conclusory infringement contentions are never sufficient. See
`
`id. at 528.
`
`A plaintiff may allege infringement either literally or under the doctrine of
`
`equivalents. See Rule LPR 4.1(b)(4). A plaintiff claiming infringement under the
`
`doctrine of equivalents must present “particularized testimony and linking
`
`argument as to the insubstantiality of the differences between” the requirements of
`
`the patent claim and the accused device. Amgen Inc. v. F. Hoffman-La Roche Ltd.,
`
`580 F.3d 1340, 1382 (Fed. Cir. 2009). As with assertions of literal infringement,
`
`this analysis must be presented on a limitation-by-limitation basis for each asserted
`
`patent claim.
`
` See
`
`id.
`
` Infringement contentions without
`
`the required
`
`“particularized testimony” and argument do not comply with the requirements of
`
`Rule LPR 4.1(b)(4), “which is crafted to encourage parties to take positions as to
`
`the asserted claims.” Schütz Container Sys., Inc. v. Mauser Corp., 2010 WL
`
`2408983, at *2 (N.D. Ga. 2010) (striking “boilerplate” doctrine of equivalents
`
`infringement contentions).
`
`
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`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 11 of 27
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`
`
`IV. ARGUMENT
`A.
`Ironburg’s infringement contentions fail to identify specifically
`where each limitation of each asserted claim is allegedly found
`within the Steam controller.
`
`Ironburg’s infringement contentions fail to comply with the Local Patent
`
`Rules because they do not specifically identify where each limitation of each
`
`asserted claim is found within the Steam controller. For example, Ironburg never
`
`discloses which specific portion of the Steam controller corresponds to the claimed
`
`“elongate member.” Valve is entitled to know what Ironburg contends is the
`
`“elongate member” so that it can formulate its noninfringement strategy.
`
`Ironburg’s contentions about this claim term will also inform Valve’s invalidity
`
`positions. Ironburg’s infringement theory regarding this claim limitation is
`
`especially important, because this element appears in every claim of the Asserted
`
`Patents.
`
`Every independent claim of the Asserted Patents recites a control located on
`
`the back of the handheld controller (a “back control”) which either “includes” or
`
`“comprises” a so-called “elongate member.” See ’525 Patent, Claims 1, 20; ’770
`
`Patent, Claim 1; ’688 Patent, Claims 1, 30; ’229 Patent, Claims 1, 24.
`
`Furthermore, many of the asserted claims place further limitations on the “elongate
`
`member.” To illustrate the prevalence of this claim element throughout the patent
`
`
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`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 12 of 27
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`
`
`claims, the following table lists the various limitations that modify “elongate
`
`member.”
`
`Asserted
`Claim(s)
`’525 Claims 1
`and 20
`’770 Claim 2
`’525 Claim 1
`’688 Claim 29
`’229 Claim 1
`’525 Claim 7
`
`’525 Claim 8
`
`’525 Claim 9
`
`’525 Claim 10
`
`’525 Claim 11
`
`’525 Claim 12
`’525 Claim 15
`’688 Claim 23
`’229 Claim 18
`’770 Claim 1
`
`Limitation
`
`Each elongate member “extends substantially the full distance
`between the top edge and the bottom edge” of the controller
`
`Each elongate member “is inherently resilient and flexible”
`
`Each elongate member “is mounted within a recess located in
`the case of the controller”
`Each elongate member “comprises an outermost surface which
`is disposed in close proximity to the outermost of the controller
`such that a user’s finger may be received in said respective
`recess”
`“Each elongate member has a thickness between about 1 mm
`and 10 mm”
`“Each elongate member has a thickness between about 1 mm
`and 5 mm”
`“Each elongate member has a thickness between about 1 mm
`and 3 mm”
`“The elongate members are parallel to one another”
`“A switch mechanism is disposed between each of the elongate
`members and an outer surface of the back of the controller”
`
`Each elongate member “extends along at least half of a
`first/second distance between the top edge and the bottom
`edge” of the controller
`
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`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 13 of 27
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`
`
`Limitation
`
`Each elongate member “is positioned at or adjacent a
`first/second transition edge between the first/second handle and
`the recessed portion” of the back of the controller
`’770 Claim 12 Each elongate member “is configured to contact a first/second
`switch mechanism”
`“The first/second switch mechanism is disposed between the
`first/second elongate member and an outside surface of the
`back” of the controller
`“The first/second switch mechanism is mounted within the
`outer case and extends through the outer case with a distal end
`in close proximity or in contact with an innermost surface of
`the first/second elongate member”
`“The first elongate member and the second elongate member
`are either parallel with one another or converge towards one
`another in a direction pointing from the bottom edge to the top
`edge” of the controller
`“Each of the first elongate member and the second elongate
`member is mounted on an outside surface of the back of the
`outer case”
`“A top end of each of the first elongate member and the second
`elongate member that is nearest the top edge is mounted on the
`outside surface of the back of the outer case”
`“Each of the first elongate member and second elongate
`member is a paddle lever”
`“Each of the first elongate member and second elongate
`member is configured to be displaced by engaging an outer
`surface thereof to activate a switch mechanism”
`“The first elongate member comprises a first surface disposed
`proximate an outer surface of the case and the first elongate
`member comprises a second surface opposing the first surface,
`the second surface being configured and arranged to be non-
`
`Asserted
`Claim(s)
`’770 Claims 8
`and 11
`
`’770 Claim 13
`’229 Claim 18
`
`’770 Claim 14
`
`’770 Claim 15
`’688 Claims 20
`and 21
`
`’770 Claim 16
`
`’770 Claim 17
`
`’770 Claim 19
`
`’770 Claim 20
`
`’688 Claim 1
`
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`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 14 of 27
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`
`
`Asserted
`Claim(s)
`
`’688 Claim 2
`
`’688 Claim 9
`’229 Claim 1
`’688 Claim 10
`’229 Claim 2
`
`’688 Claim 11
`’229 Claim 3
`
`’688 Claim 12
`’229 Claim 4
`
`’688 Claim 13
`’229 Claim 5
`’688 Claim 18
`’229 Claim 16
`’688 Claim 19
`’229 Claim 17
`’688 Claim 22
`
`Limitation
`
`parallel with a portion of the outer surface of the back of the
`case to which the first elongate member is mounted”
`“The second surface of the first elongate member is configured
`and arranged to be non-parallel with the first surface of said
`first elongate member”
`“The first elongate member is at least partially disposed in a
`respective channel formed in a rear surface of the case”
`“The first elongate member is at least partially disposed in a
`respective channel formed in a rear surface of the case, the
`channel being configured and arranged to form a close fit to at
`least a portion of the first elongate member so as to provide
`lateral support thereto”
`“The first elongate member comprises a first dimension and the
`case comprises a cover portion forming a conduit enclosing the
`first elongate member within the respective channel along a
`portion of the first dimension of the first elongate member”
`“The first elongate member comprises a longitudinal dimension
`and the case comprises a cover portion forming a conduit
`enclosing the first elongate member within the respective
`channel along a portion of the longitudinal dimension of the
`first elongate member”
`“The first elongate member comprises a first part of a
`complementary locking mechanism”
`“The first elongate member is formed from material having a
`thickness less than 5 mm”
`’The first elongate member is formed from material having a
`thickness between 1 mm and 3 mm”
`“A portion of the first elongate member is in registry with a
`switch mechanism disposed with in the case, such that
`displacement of the first elongate member activates the switch
`mechanism”
`
`
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`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 15 of 27
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`
`
`Asserted
`Claim(s)
`’688 Claim 30
`
`Limitation
`
`“The elongate member comprises a first surface for being
`disposed proximate an outer surface of the base of the games
`controller, and wherein the elongate member comprises a
`second surface opposing the first surface, the second surface
`being configured and arranged to be non-parallel with a portion
`of the outer surface of the base of the games controller adjacent
`to which the elongate member is to be mounted”
`’229 Claim 10 Each elongate member “is detachable from the outer case”
`’229 Claim 11
`“Each of the elongate members comprising an outermost
`surface, and wherein the outermost surface of a first elongate
`member is orientated at an angle to the outermost surface of a
`second adjacent elongate member”
`
`
`
`Despite the fact that every claim includes this “elongate member” limitation,
`
`Ironburg’s infringement contentions fail to specifically identify which portion of
`
`
`
`the Steam controller allegedly corresponds to the “elongate member.”
`
` The Steam controller’s battery door has a “wing” on each side
`
`that a user can press to engage a switch within the controller body. Ironburg’s
`
`infringement contention for claim 1 of the ’525 patent is typical:
`
`
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`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 16 of 27
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`
`
`Dec. 15, 2016 ’525 Patent Infringement Contentions (Exh. H) at 4-5.
`
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`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 17 of 27
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`
`
`
`
`infringement theory, and that is the fundamental deficiency of its infringement
`
` In any event, Ironburg is not revealing its
`
`contentions.
`
`Ironburg’s contentions for the dependent claims do not resolve this
`
`vagueness. Consider claims 20 and 21 of the ’688 patent, for example. Claim 20
`
`requires the elongate members to be “parallel with respect to one another,” while
`
`
`
`Ironburg’s
`
`claim 21 requires them to “converge towards the front end of the case.”
`
`contentions for claim 20 are as follows.
`
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`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 18 of 27
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`
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`Dec. 15, 2016 ’688 Patent Infringement Contentions (Exh. H) at 26.
`
`For claim 21, which requires the “elongate members” to converge with
`
`respect
`
`to one another,
`
`Ironburg provides
`
`the
`
`following contentions.
`
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`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 19 of 27
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`
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`Dec. 15, 2016 ’688 Patent Infringement Contentions (Exh. H) at 26-27. Again,
`
`Ironburg’s contentions fail to specifically identify which portion of the Steam
`
`controller it contends is an “elongate member.”
`
`Ironburg’s hiding the ball regarding its infringement theories places Valve at
`
`a great disadvantage. Valve must either guess at Ironburg’s theories—and risk
`
`being wrong—or must formulate a set of alternative defenses to address each
`
`potential infringement theory. The purpose of infringement contentions under the
`
`Local Patent Rules
`
`is
`
`to avoid such a situation,
`
`thereby discouraging
`
`gamesmanship and facilitating early resolution of disputes. See McKesson, 495 F.
`
`Supp. 2d at 1332.
`
`There is no excuse for bare-bones contentions like Ironburg’s, especially in a
`
`case like this one, where Ironburg already has all the necessary information
`
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`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 20 of 27
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`
`
`regarding the accused product. The Steam controller is commercially available for
`
`purchase, and Valve produced a Steam controller in discovery. Ironburg’s
`
`infringement contentions include photos of a controller that Ironburg apparently
`
`has in its possession. The patent claims are directed exclusively to mechanical
`
`aspects of the controller that Ironburg can evaluate simply by examining the
`
`controller. There is no additional information, such as source code, for example,
`
`that Ironburg must obtain through discovery in this lawsuit.
`
`This case has been pending for over a year, and Valve is still waiting to learn
`
`Ironburg’s infringement theories. Attempts to resolve this dispute without
`
`involving the Court have failed. Consequently, Valve asks the Court for an order
`
`compelling Ironburg to provide supplemental infringement contentions that
`
`specifically identify where each claim limitation, including the “elongate member,”
`
`is found in the accused Steam controller.
`
`B.
`
`Ironburg’s doctrine of equivalents contentions are inadequate and
`untimely.
`
`Ironburg’s December 15 infringement contentions include the doctrine of
`
`equivalents (“DOE”) as an alternative infringement theory for the first time.
`
`
`
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`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 21 of 27
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`
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` As a preliminary matter, Ironburg’s DOE contentions are
`
`untimely, having been first asserted over five months after the deadline. This alone
`
`would justify striking these contentions. See Schütz, 2010 WL 2408983, at *2
`
`(striking “boilerplate” doctrine of equivalents infringement contentions).
`
`None of Ironburg’s DOE assertions provide any detail about Ironburg’s
`
`specific infringement theory. Ironburg presents no particularized description or
`
`argument as to the alleged insubstantiality of the differences between the claim
`
`limitations and the Steam controller. Ironburg does not even identify what those
`
`differences are. Instead, for each DOE assertion, Ironburg merely includes a
`
`
`
`sentence stating that,
`
`
`
`Boilerplate DOE contentions do not satisfy the requirements of the Local
`
`Patent Rules, and should be stricken. See Schütz, 2010 WL 2408983, at *2; see
`
`also Sipco, LLC v. Control4 Corp., Case No. 1:11-cv-00612-JEC-ECS (N.D. Ga.
`
`Sept. 29, 2012), attached as Exhibit J. In both Schütz and Sipco, the plaintiffs’
`
`infringement contentions included a paragraph globally asserting infringement
`
`under the DOE for all asserted claims. See Schütz, 2010 WL 2408983, at *2;
`
`
`
`- 17 -
`
`

`

`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 22 of 27
`
`
`
`Sipco, p. 12. This Court rejected that approach both times, reasoning that the DOE
`
`was designed to “prevent a fraud on the patent.” See Sipco, p. 12, quoting Graver
`
`Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950). The doctrine
`
`was not intended simply “to provide a second shot at proving infringement.”
`
`Sipco, p. 12, citing Rambus Inc. v. Hynix Semiconductor Inc., 2008 WL 5411564,
`
`at *3 (N.D. Cal. 2008). Consequently, the Court struck both plaintiffs’ DOE
`
`contentions. See Schütz, 2010 WL 2408983, at *2; Sipco, p. 13.
`
`
`
`Like the contentions in Schütz and Sipco, Ironburg’s DOE contentions are
`
`mere boilerplate, providing no details regarding Ironburg’s infringement theory.
`
`Ironburg does undertake the extra step of repeating its DOE assertion for each
`
`claim limitation, rather than including it as a single paragraph apart from the claim
`
`charts. However, this different format does not provide any additional substance.
`
`Ironburg’s contentions are substantively identical to those of Sipco and Schütz, and
`
`are likewise deficient. The Court should strike Ironburg’s DOE contentions.
`
`V. CONCLUSION
`The Local Patent Rules require a plaintiff to provide detailed infringement
`
`contentions. Ironburg’s contentions do not comply with the rules, because they fail
`
`to identify specifically where each limitation of each asserted claim is found in the
`
`Steam controller. Ironburg’s doctrine of equivalents contentions are untimely and
`
`
`
`- 18 -
`
`

`

`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 23 of 27
`
`
`
`also fail to sufficiently disclose the details of Ironburg’s allegations of
`
`infringement. The Court should order Ironburg
`
`to provide supplemental
`
`infringement contentions that fully comply with the rules, and should strike
`
`Ironburg’s DOE contentions altogether.
`
`Dated: January 4, 2017
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Thomas W. Curvin
`Thomas W. Curvin
`GA Bar No. 202740
`SUTHERLAND ASBILL & BRENNAN LLP
`999 Peachtree Street, NE, Suite 2300
`Atlanta, Georgia 30309-3996
`Telephone: (404) 853-8000
`Facsimile:
`(404) 853-8806
`tom.curvin@sutherland.com
`
`By: /s/ Patrick A. Lujin
`B. Trent Webb
`MO Bar No. 40778 (Pro Hac Vice)
`Patrick A. Lujin
`MO Bar No. 41392 (Pro Hac Vice)
`Mark D. Schafer
`MO Bar No. 67197 (Pro Hac Vice)
`SHOOK, HARDY & BACON L.L.P.
`2555 Grand Boulevard
`Kansas City, Missouri 64108
`Telephone: (816) 474-6550
`Facsimile:
`(816) 421-5547
`bwebb@shb.com
`plujin@shb.com
`mschafer@shb.com
`
`and
`
`
`
`- 19 -
`
`

`

`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 24 of 27
`
`
`Tanya L. Chaney
`TX Bar No. 24036375 (Pro Hac Vice)
`SHOOK, HARDY & BACON L.L.P.
`600 Travis Street, Suite 3400
`Houston, Texas 77002
`Telephone: (713) 227-8008
`Facsimile:
`(713) 227-9508
`tchaney@shb.com
`
`Attorneys for Defendant
`VALVE CORPORATION
`
`
`- 20 -
`
`
`
`
`
`

`

`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 25 of 27
`
`CERTIFICATE OF COMPLIANCE
`
`Pursuant to LR 7.1D, the undersigned counsel hereby certifies that the
`
`foregoing Defendant Valve Corporation’s Memorandum in Support of Motion to
`
`Compel Supplemental Infringement Contentions and Motion to Strike Doctrine of
`
`Equivalents Infringement Contentions complies with the font and point selections
`
`approved by the Court in LR 5.1C. This document was prepared on a computer
`
`using the Times New Roman font (14 point).
`
`
`/s/ Thomas W. Curvin
`Thomas W. Curvin
`
`
`
`
`
`

`

`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 26 of 27
`
`CERTIFICATE OF CONFERENCE
`
`Pursuant to Fed. R. Civ. P. 37(a)(1) and LR 37.1A(1), the undersigned
`
`hereby certifies that he has in good faith conferred with counsel for the Plaintiff in
`
`an effort to obtain the foregoing information without Court action.
`
`
`/s/ Thomas W. Curvin
`Thomas W. Curvin
`
`
`
`
`
`
`
`

`

`Case 1:15-cv-04219-TWT Document 71-1 Filed 01/04/17 Page 27 of 27
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on January 4, 2017, I electronically filed the foregoing
`
`
`
`
`
`DEFENDANT VALVE CORPORATION’S MEMORANDUM IN SUPPORT OF
`
`MOTION TO COMPEL SUPPLEMENTAL INFRINGEMENT CONTENTIONS
`
`AND MOTION
`
`TO
`
`STRIKE DOCTRINE OF
`
`EQUIVALENTS
`
`INFRINGEMENT CONTENTIONS with the Clerk of Court using the CM/ECF
`
`system which will automatically send e-mail notification of such filing to the
`
`following attorneys of record:
`
`Cynthia R. Parks
`PARKS IP LAW LLC
`730 Peachtree St., NE, Suite 600
`Atlanta, GA 30308
`cparks@cparksip.com
`
`Robert D. Becker
`MANATT, PHELPS & PHILLIPS LLP-CA
`1841 Page Mill Road
`Palo Alto, CA 94304
`rbecker@manatt.com
`
`/s/ Thomas W. Curvin
`Thomas W. Curvin
`
`
`
`
`
`
`
`

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